What is the Holistic Test in Assessing Trademarks?

Nicolas & de Vega Article What is the Holistic Test in Assessing Trademarks

The Holistic Test requires that the entirety of the marks in question be considered in resolving confusing similarity of competing trademarks.

A trademark cannot be registered if it is confusingly similar to another trademark

A trademark cannot be registered if it is identical with or confusingly similar to a trademark with an earlier filing or priority date covering the same or closely related goods (Sec. 123 (d) of Republic Act No. 8293). In determining the likelihood of confusion, two tests are employed, namely the dominancy test and the holistic test.

The holistic test considers the mark as a whole in determining confusing similarity among the trademarks

Under the holistic test, the marks are considered as a whole. An essential factor in determining whether two trademarks are confusingly similar is whether or not there is a general similarity in their appearance (Luft Co., Inc. vs. Ngo Guan, 18 SCRA 944 (1996).  This requires a comparison of the marks in their entirety as they appear in their respective labels and in relation to the goods to which they are attached since the discerning eye of the observer must focus not only on the predominant words, but also on the other features appearing on the labels. Factors such as sound; appearance; form, style, shape, size or format; color; ideas connoted by the marks; the meaning, spelling, and pronunciation of words used; and the setting in which the words appear’ may be considered (Etepha v. Director of Patents, G.R. No. L-20635, 31 March 1966).

In the following cases, the trademarks were held NOT to be confusingly similar

Thus, in the case of Emerald Garment Manufacturing Corporation vs. Court of Appeals (G.R. No. 100098, 29 December 1995), the Supreme Court applied the holistic test and held that there is no confusing similarity between the marks “LEE” and “STYLISTIC MR. LEE” covering clothing since the labels are different. The same doctrine was enunciated in the case of Fruit of the Loom vs. Court of Appeals (G.R. No. L-32747, 29 November 1984),  where it was ruled that the similarities of the competing trademarks FRUIT OF THE LOOM and FRUIT FOR EVE are completely lost in the substantial differences in the design and general appearance of their respective hang tags. Furthermore, in Philip Morris, Inc. vs. Fortune Tobacco Corporation (G.R. No. 158589, 27 June 2006), the Supreme Court elucidated that although the perceived offending word “MARK” is itself prominent in the competing mark “MARK VII” and “MARK TEN,” the entire marking system should be considered as a whole and not dissected, because a discerning eye would focus not only on the predominant word but also on the other features appearing in the labels. Thus, the marks were considered not to be confusingly similar.

The following trademarks were held to be similar under the holistic test

The same holistic test was used in finding the likelihood of confusion between the trademarks DEL MONTE & logo and SUNSHINE FRUIT CATSUP logo in the case of Del Monte Corporation vs. Court of Appeals (G.R. No. L-78325, 25 January 2020) due to the similarity in appearance, colors and packaging.  Since the product involved was catsup, an ordinary household item, the Supreme Court ruled that the general impression of the ordinary purchaser, buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods is the touchstone. Thus, the court should be guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the value of which may be dissipated as soon as the court assumes to analyze carefully the respective features of the mark.

That is how the holistic test is applied in trademark law in the Philippines.

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